Ex Parte Sheng et al

Board of Patent Appeals and Interferences

Jul 16, 2012

11397686 (B.P.A.I. Jul. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/397,686 04/05/2006 Thomas Sheng 3722-0292PUS1 7133
60601 7590 07/16/2012
Muncy, Geissler, Olds & Lowe, PLLC
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
KUMAR, KALYANAVENKA K
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
07/16/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS SHENG
and CHARLIE CHOU
____________

Appeal 2010-004632
Application 11/397,686
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL C. ASTORINO, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1, 2, and 4-11. App. Br. 4.1 Claim 3 has been canceled. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.

1 Refers to Appeal Brief filed May 27, 2009.
Appeal 2010-004632
Application 11/397,686

2
CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter on appeal:
1. An automatic document feeder assembly, comprising:
a scan-sorting unit; and
an automatic document feeder electrically connected to
the scan-sorting unit, the scan-sorting unit scanning, one by
one, front sides of a plurality of originals fed by the automatic
document feeder to obtain a plurality of original image signals
and sorting, one by one, the original image signals to output a
plurality of sorting signals, the automatic document feeder
comprising a sheet input tray, a sheet output module and a
sheet-feeding mechanism for feeding the originals from the
sheet input tray to the sheet output module, wherein:
the sheet output module sorts the originals into a plurality
of original groups according to the sorting signals and stores the
originals according to the original groups; and
the scan-sorting unit sorts the original image signals into
a plurality of signal groups corresponding to the original groups
according to the sorting signals, and stores the original image
signals according to the signal groups.

REJECTIONS
Claims 1, 2, 4, 7, 9, and 11 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Quine (US 2006/0124512 A1; pub. Jun. 15, 2006).
Claims 5 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quine.
Claims 6 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quine and Lamb (US 4,693,373; iss. Sep. 15, 1987).

Appeal 2010-004632
Application 11/397,686

3
ANALYSIS
Claims 1, 2, 4, 7, 9, and 11 as anticipated by Quine
The Examiner found that Quine discloses an automatic document
feeder assembly with a sheet input tray 200, a sheet output module 300-303,
a sheet-feeding mechanism for feeding originals from the sheet input tray
200 to the sheet output module 300-303, and a scan-sorting unit that scans
the front sides of a plurality of originals fed by the automatic document
feeder to obtain a plurality of original image signals and sorts the original
image signals into a plurality of signal groups corresponding to the original
groups according to sorting signals. Ans. 3-4 (citing para. [0048]). The
Examiner also found that Quine stores original image signals as a data file
330 that is used to sort original groups based on information obtained from
data file 330 such as thickness, barcode, tachometer, and OCR. Ans. 6-7.
Appellants argue that Quine does not disclose a scan-sorting unit that
sorts and stores original image signals obtained by scanning the front sides
of a plurality of originals fed by an automatic document feeder. App. Br. 10.
Appellants also argue that data file 330 is a pre-existing data file that exists
before a scanning device of the sorter system is used to scan mail pieces and
therefore cannot include original image signals obtained from scanning mail
pieces. Reply Br. 2 (citing Fig. 4). Appellants further argue that paragraph
[0048] of Quine does not disclose sorting and storing original image signals
as the Examiner found (App. Br. 10-11) but instead discloses that thickness
sensor 208, camera barcode reader 212, tachometer 213, optical character
reader (OCR) 214, and ink-jet printer 216 may not be required when sorter
control computer 310 uses a mail run data file to provide information,
including sequence, about each mail piece in the magazine 200. Reply Br. 2.
Appeal 2010-004632
Application 11/397,686

4
The Examiner has not established by a preponderance of evidence that
Quine discloses a scan-sorting unit that scans the front sides of a plurality of
originals that are fed by an automatic document feeder to obtain a plurality
of original image signals, and sorts and stores the original image signals into
a plurality of signal groups that correspond to the original groups. Quine
discloses that a mail run data file (MRDF) 330 may be used by sorter control
computer 310 to sort mail pieces into delivery point sequence. Paras. [0033,
0048]). However, Quine does not disclose that MRDF 330 comprises any
original image signals. Paragraph [0048] states that MRDF 330 may include
specific information, including sequence, about each mail piece 202, but
does not indicate that the MRDF 330 includes scanned images of the mail
pieces 202. The Examiner’s finding that MRDF 330 includes information
about thickness, barcode, tachometer, optical character reader (OCR), and
ink-jet process (Ans. 6-7) is not supported by Quine, which discloses that
existing information about mail pieces may be available as a MRDF 330 but
does not disclose that any of the thickness sensor 208, CCD camera 212,
speed detector 213, OCR 214, or barcode ink-jet printer 216 are used to
create MRDF 330 from mail pieces 202 that are sorted by system 2. Paras.
[0033, 0044-0045]; fig. 1. In any case, thickness, speed, and barcodes of
mail pieces do not correspond to the claimed original image signals, which
are obtained by a scan-sorting unit scanning, one by one, the front sides of a
plurality of originals fed by the automatic document feeder. See Spec. 4, l. 8
to 5, l. 22; fig. 1. Quine discloses that a camera 212 and OCR 214 may scan
and capture information on the face of each envelope and use the scanned
information to determine a zip code and barcode that is printed on each mail
piece by ink-jet printer 216. Paras. [0038, 0045]. However, the Examiner
Appeal 2010-004632
Application 11/397,686

5
has not identified where Quine discloses that the scanned images for each
mail piece are sorted into a plurality of signal groups that correspond to the
original groups and are stored according to the signal groups as called for in
claim 1. As such, we cannot sustain the rejection of claims 1, 2, 4, 7, 9, and
11 as anticipated by Quine. We also cannot sustain the rejection of claims 5
and 10 based on Quine or the rejection of claims 6 and 8 based on Quine and
Lamb, which does not cure the deficiencies of Quine as to claim 1.
DECISION
The rejection of claims 1, 2, and 4-11 is REVERSED.

REVERSED

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